Overview
Registered designs protect various aspects of articles produced through industrial processes. They relate to appearance of the item, or more particularly its features, shape or arrangement, rather than an underlying idea. In this sense, registered designs are closer to copyright (protection of an expression of creativity) rather than patents (an inventive concept more generally).
There is substantial overlap between the copyright and registered design regimes in New Zealand. New Zealand law is fairly unique in this regard – most countries exclude copyright protection for items or aspects which could be protected by a designs regime.
What can be protected
A registered design protects specific novel aspects of an article, such as its shape, configuration, pattern or ornamentation. Design protection is only available for aspects which are visible, which designs are concerned with aesthetic appearance.
As with patents, care needs to be taken to maintain the secrecy of the design prior to filing. Public disclosure (including an offer for sale) of the design in New Zealand prior to filing can preclude registration.
Design protection is only available in New Zealand where a party takes steps to register the design. This differs from jurisdictions which confer unregistered design rights, such as the European union.
Searches and registration
Although the designs regime is not extensively used in New Zealand, it is still prudent for businesses to undertake searches of the design register to identify competing rights which might impact on product design or the right to sell a product in New Zealand.
The designs register can be searched through the IPONZ website.
Information regarding design right applications can also be found on the IPONZ website. A New Zealand application can be used as the basis for applications in other countries using the same priority date. Similarly, and perhaps more commonly in New Zealand, overseas design applications can provide a basis for a New Zealand application with the same priority date.
The priority date is important because, as with patents, this is when novelty is assessed. The design registration has a maximum period of 15 years, with an initial term of 5 years and then renewal fees payable.
Effect of registration
The proprietor of a design registration has the exclusive right in New Zealand to make, import, sell or hire any article in respect of which the design is registered, being an article to which the design, or a design not substantially different from it, has been applied.
The proprietor also has the exclusive right to make anything for enabling any such an article to be made, whether in New Zealand or elsewhere.
The remedies available for infringement for a registered design similar to those available for copyright, namely an injunction (interim or permanent) damages or an account of profits. An action for infringement must be taken in the High Court.
Lack of case law
Because New Zealand law protects designs under copyright without the need for registration, many businesses are content to rely on their unregistered rights without taking the step of applying for design registration. This in turn means that actions for infringement are relatively rare. I was instructed by the defendant on a design rights infringement action in 2018, which was the first New Zealand case to reach trial in the High Court in over 30 years.